USCA1 Opinion
UNITED STATES COURT OF APPEALS
FOR THE FIRST CIRCUIT
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Nos. 93-1290
93-1520
BOSTON BEER COMPANY LIMITED PARTNERSHIP,
D/B/A THE BOSTON BEER COMPANY,
Plaintiff, Appellant,
v.
SLESAR, BROS. BREWING COMPANY, INC.,
D/B/A BOSTON BEER WORKS,
Defendant, Appellee.
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APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
[Hon. Robert E. Keeton, U.S. District Judge]
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Before
Cyr, Circuit Judge,
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Bownes, Senior Circuit Judge,
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and Boudin, Circuit Judge.
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William O. Hennessey, with whom Richard A. Savrann and Burns &
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Levinson were on brief for appellant.
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Martin J. O'Donnell, with whom Cesari and McKenna were on brief
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for appellee.
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November 16, 1993
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BOWNES, Senior Circuit Judge. Plaintiff-appellant,
BOWNES, Senior Circuit Judge.
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The Boston Beer Company, sought to enjoin defendant-appellee,
Boston Beer Works, from using the words "Boston Beer" in its
name, and from using the word "Boston" in connection with any
of its beers. Appellant contended that appellee's name was
confusingly similar to its own, and would mislead the public
into thinking that Boston Beer Works' products or services
originated or were associated with those of The Boston Beer
Company. The district court rejected this claim, concluding
that appellant's marks "Boston Beer," as used in its name,
and "Boston," as used in connection with a number of its
products, were not entitled to trademark protection. We
affirm.
I.
I.
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BACKGROUND
BACKGROUND
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Appellant is a beer manufacturer. In 1985
appellant began brewing Samuel Adams Boston Lager at a
brewery in Pittsburgh, Pennsylvania under the name "Boston
Beer Company." The Pittsburgh facility was independently
owned, and appellant operated it as a contract brewer,
namely, one who engages another to manufacture beer in a
brewery owned by the other. Presently, appellant has
contract breweries in Pittsburgh, Utica, New York, and
Portland, Oregon.
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In November 1988 appellant first began to brew its own
beer at a brewery located in Boston. This also marked the
first time that appellant actually brewed any beer in the
city that shares its name. Appellant has, however, always
called Boston its corporate home, and virtually all of its
assets and non-sales employees can be found in Massachusetts.
Appellant's "Boston" brews are not limited to
Samuel Adams Boston Lager. In fact, appellant has what it
refers to as a "family" of "Boston" beers. In addition to
Samuel Adams Boston Lager, other members of this family are
Boston Lightship, which appellant began marketing in
September 1987, and Samuel Adams Boston Ale, which appellant
began marketing in October 1988.1 Appellant's beers are
marketed and distributed throughout the United States and
abroad. Appellant sells its beers to restaurants, bars,
package stores and grocery stores for resale; it does not
make any sales directly to the public.
Over the past five years appellant has spent
substantial amounts of money promoting its products in the
Boston area. From 1988 through 1992, appellant spent
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1. This is not, however, the extent of appellant's
brews. In fact, appellant sports an entire line of "Samuel
Adams" beers, including: "Samuel Adams Cranberry Lambic,"
"Samuel Adams Cream Stout," "Samuel Adams Double Bock,"
"Samuel Adams Triple Bock," "Samuel Adams Oktoberfest,"
"Samuel Adams Wheat Brew," "Samuel Adams Winter Ale" and
"Samuel Adams Winter Lager."
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approximately $350,000 in advertising on major Boston radio
stations. Among the various other promotional means used by
appellant are billboards, print advertising, and sales of
promotional materials such as coasters, balloons, hats, table
tents and table tent holders. By 1992 appellant's total
sales in the Boston area had exceeded $3 million and its
total sales had exceeded $20 million.
Appellee is a restaurant and brew pub. On April
10, 1992, it opened for business on Brookline Avenue in the
Kenmore Square section of Boston, directly across the street
from Fenway Park, home of the Boston Red Sox. As a brew pub,
appellee is a licensed restaurant that brews beer on-site for
consumption by its patrons. One of the beers brewed by
appellee is named "Boston Red." In addition to brewing and
serving its own beers, appellee offers a wide range of food.
Appellant commenced this action on April 14, 1992
alleging trademark and trade name infringement,
misappropriation and unfair competition pursuant to 43(a)
of the Lanham Act, 15 U.S.C. 1125(a), the general laws of
the Commonwealth of Massachusetts and common law. The first
amended complaint alleged, inter alia, that appellee's
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"adoption of `BOSTON BEER WORKS' made with knowledge of
Plaintiff's prior use of the trademark and trade name `BOSTON
BEER COMPANY' and its `BOSTON BRAND' family of trademarks
...." constitutes a violation of 43(a) of the Lanham Act.
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First Amended Complaint at 17. On April 15 appellant moved
for a temporary restraining order to stop appellee from using
the names "Boston Beer Works" and "Boston Red." The motion
was denied the same day.
On April 21 appellant moved for a preliminary
injunction. After two days of hearings and argument the
district court denied the motion. In a Memorandum and Order
dated June 18, 1992 (the "June Memorandum"), the district
court found that the appellant's marks were not entitled to
trademark2 protection.
The district court found first that "plaintiff's
`BOSTON BEER' mark as used in its name `BOSTON BEER COMPANY'
is sufficiently descriptive so as not to be considered
generic and thus unprotectable." June Memorandum at 9.
Next, the court found that "plaintiff's `BOSTON' mark as used
in its `SAMUEL ADAMS BOSTON' beers and its `BOSTON LIGHTSHIP'
beer is a descriptive term." In fact, the court found that
appellant did not even contend that its marks were anything
but descriptive. Id. Therefore, the court stated, in order
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to satisfy its burden of establishing that its marks are
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2. For purposes of this opinion, the term trademark
includes trade names as well. Although there are differences
between the two concerning, inter alia, registration under
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the Lanham Act, the differences are not relevant to our
decision in this case. See Union National Bank, Laredo v.
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Union National Bank, Austin, 909 F.2d 839, 841 n.2 (5th Cir.
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1990) (citing Blinded Veterans Assoc. v. Blinded American
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Veterans Foundation, 872 F.2d 1035, 1040 n.11 (D.C. Cir.
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1989)).
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entitled to trademark protection, "[p]laintiff must still
make a showing, under a likelihood standard, that its name
and marks have acquired secondary meaning." Id.
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After reviewing the relevant preliminary injunction
considerations, the court concluded that appellant had "not
shown a likelihood of establishing by a preponderance of the
evidence a secondary meaning for `BOSTON BEER' and `BOSTON.'"
Id. at 15. Specifically, the court found that although
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appellant had been using the name "Boston Beer Company" and
the term "Boston" in connection with Samuel Adams Boston
Lager since late 1985, not all of appellant's promotional
materials contained "The Boston Beer Company" name, and those
that did, always used it along with another of appellant's
beer marks. "For example," the court pointed out, "on the
cards plaintiff prints to be inserted into table tents for
restaurants and bars, the `BOSTON BEER COMPANY' name appears
on the bottom of the card with plaintiff's `SAMUEL ADAMS'
logo and its slogan `The Best Beer in America' appearing at
the top of the card." June Memorandum at 11. Moreover, the
court found that all of the promotions that did include the
company's name, "place[d] the name on the bottom and in
smaller type than the rest of the words on the promotional
item." Id.
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As far as the labels appearing on each of
appellant's three "Boston" beers, the court noted that
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"Boston" did in fact appear in each of the beers' names. In
addition, the court found that each beer's bottle label
contained an illustration or logo, and that, on bottles of
Samuel Adams Boston Lager and Boston Lightship, the words
"Samuel Adams" and "Lightship" were in larger print than the
words "Boston Lager" and "Boston," respectively. Finally,
the court found that the name "Boston Beer Company" appeared
at the bottom of all appellant's labels in a smaller type
than either the illustration or the other words on the label.
It was undisputed that appellant engaged in
substantial advertising and promotion of its products in the
Boston area. The court found, however, that appellant's
efforts were "focused in the direction of promoting a
connection between 'SAMUEL ADAMS' and plaintiff's
products[,]" and not towards establishing a connection
between the terms "Boston Beer" and "Boston" and its beer
products. Id. at 15-16. In reaching this result, the court
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examined appellant's billboards, radio advertisements,
various promotional paraphernalia, and a promotional
brochure. Finally, the court pointed out that the vast
majority of appellant's advertising is directed towards its
best-selling brand, Samuel Adams Boston Lager, and that
appellant produces other "Samuel Adams" beers that are not
part of its "Boston" family. As the court also observed,
[t]he fact that plaintiff produces other
Samuel Adams beers, with the same Samuel
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Adams logo as appears on its "Samuel
Adams Boston Lager" and "Samuel Adams
Boston Ale" beer labels, but without the
"BOSTON" family name, reduces the
likelihood that a consumer will associate
"BOSTON" or "BOSTON BEER" with
plaintiff's products.
June Memorandum at 14-15. In summary, the court found that,
notwithstanding the duration of appellant's use of the
"Boston Beer Company" name and the term "Boston" in
connection with three of its products, it had not directed
its advertising and promotional activities to creating a
connection between "Boston Beer" and its products, and had
not made efforts at promoting a connection between "Boston"
and its products, and therefore it had not shown a likelihood
of establishing secondary meaning.
On February 9 and 10, 1993 a non-jury trial was
held, at the conclusion of which the court gave its decision
from the bench. The sole issues litigated were: (1) whether
secondary meaning had attached to "Boston" and "Boston Beer,"
and (2) if so, whether a likelihood of consumer confusion
existed. Appellant's principal evidence at trial consisted
of a consumer survey.
The survey was conducted among 400 "beer drinkers"
from the greater-Boston area who were split into two groups
of 200. Each group was provided with a choice of
approximately 20 beers and asked to identify the beer or
beers produced by each of three different "beer companies."
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Both groups were asked about the "Latrobe Brewing Company"
and the "Anheuser-Busch company." One group was asked about
Boston Beer Company and the other about Boston Beer Works.
Included on the list were appellant's three "Boston" beers
which appeared as "Samuel Adams beer," "Boston Ale," and
"Lightship." The other beers consisted of various domestic
and imported brands.
When asked what brand of beer was produced by
Boston Beer Company, 36% responded with Samuel Adams beer.
Boston Ale and Lightship each garnered 4%, and 59% responded
that they did not know. Similarly, for the group asked about
Boston Beer Works, 31% responded with Samuel Adams, 4% with
Boston Ale, 2% Lightship and 66% could not identify any
brand.
After hearing all of the evidence, the court found:
The principal difference between the
evidence that was before me at the time
of the preliminary injunction hearing and
the evidence that is before me in the
full development of the case here on
trial is the addition of the survey
evidence that the plaintiff has offered.
I find that that is not sufficient to
establish a secondary meaning and indeed
as fact finder I find that it does not
even strongly support an inference of
secondary meaning.
The court went on to identify what it felt were two
problems with the survey. First it had trouble drawing
inferences favorable to appellant from the survey because
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participants were told that they were going to be asked
questions about beer "companies" as opposed to a neutral term
such as "producers" or "brewers."
Second and more importantly, the district court
found that the survey results simply did not provide strong
support for an inference of secondary meaning. In a lengthy
colloquy with appellant's trial counsel the district court
explained that "[a] strong inference I draw from this is that
when the interviewee is prompted by three words, two of which
are 'Boston Beer,' a third of them come back with 'Samuel
Adams'." "Is that enough" the court queried, "if [the
interviewees are] just associating Samuel Adams with somebody
who produces beer in Boston ...." In other words, the court
found that the survey provided a strong inference of an
association between product and place, but not between
product and source.3 This association, the court believed,
explained the fact that similar percentages associated Samuel
Adams with Boston Beer Company and Boston Beer Works.
According to the court, the results
support[ed] an inference of uncertainty,
if not confusion, as between Boston Beer
Works and Boston Beer Company, but that
is not the issue that is decisive of the
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3. On this point, the district court commented: "Well,
don't people associate Samuel Adams with Boston, at least any
of them who have their American history course still in
mind?" The court added that this might particularly be the
case with, "upper-scale Samuel Adams beer drinkers[.]"
Appendix at 608.
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adequacy of the evidence before me to
show secondary meaning. So taking into
account that evidence along with all the
other evidence before me, I find by a
preponderance of the evidence that there
has not been an establishment of a
secondary meaning that associates the
product with Boston Beer Company.
Because the trial court found that appellant had failed to
meet its burden on secondary meaning, the court did not reach
the issue of likelihood of confusion. This appeal followed.
II.
II.
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DISCUSSION
DISCUSSION
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Appellant argues that the district court committed
legal error by failing to make an independent finding that
the marks lack "inherent distinctiveness," to go along with
its finding that the marks "Boston" and "Boston Beer" were
descriptive. Alternatively, appellant contends that, even if
the court did not commit any legal error on this front, its
finding that the marks are descriptive was clearly erroneous.
Next, appellant argues that the district court's finding that
the survey was not highly probative of secondary meaning was
clearly erroneous. Alternatively, appellant contends that
the district court misunderstood the doctrine of secondary
meaning. Finally, appellant argues that the survey, standing
alone or together with the other evidence, established a
likelihood of confusion as a matter of law, and therefore the
court's finding that its marks lacked secondary meaning was
illogical.
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Neither mark over which appellant asserts exclusive
rights - "Boston Beer" and "Boston" - are registered.
Therefore the present claim is based upon 43(a) of the
Lanham Act which covers unregistered trademarks.4 Section
43(a) prohibits any person from using
in connection with any goods ... or any
container for goods, ... any word, term,
name, symbol, or device, or any
combination thereof ... which ... is
likely to cause confusion, or to cause
mistake, or to deceive ... as to the
origin, sponsorship, or approval of his
or her goods ... by another person.
15 U.S.C. 1125(a). It is settled that 43(a) of the
Lanham Act protects qualifying unregistered marks, and that
the general principles qualifying a mark for registration
under 2 of the Lanham Act are generally applicable in
determining whether an unregistered mark is entitled to
protection under 43(a). Two Pesos, Inc. v. Taco Cabana,
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Inc., __ U.S. __ , 112 S. Ct. 2753, 2757 (1992).
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A court's inquiry into whether a term merits
trademark protection starts with the classification of that
term along the spectrum of "distinctiveness." At one end of
the spectrum there are generic terms that have passed into
common usage to identify a product, such as aspirin, and can
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4. A trademark is defined as "any word, name, symbol,
or device, or any combination thereof used by a person to
identify and distinguish his or her goods, including a unique
product, from those manufactured or sold by others and to
indicate the source of the goods, even if that source is
unknown." 15 U.S.C. 1127.
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never be protected. Two Pesos, 112 S. Ct. at 2757; Miller
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Brewing Co. v. Falstaff Brewing Co., 655 F.2d 5, 7-8 (1st
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Cir. 1981). In the middle there are so-called descriptive
terms, such as a geographical term, which can be protected,
but only if it has acquired "secondary meaning" by which
consumers associate it with a particular producer or source.
Two Pesos, 112 S. Ct. at 2757; Volkswagenwerk AG v. Wheeler,
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814 F.2d 812, 816 (1st Cir. 1987). At the other end of the
spectrum, there are suggestive, arbitrary and fanciful terms
that can be protected without proof of secondary meaning.
These terms are considered "inherently distinctive." Two
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Pesos, 112 S. Ct. at 2757; see Wiley v. American Greetings
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Corp., 762 F.2d 139, 141 (1st Cir. 1985) ("a design is
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considered 'inherently distinctive' if it is fanciful or
arbitrary") (footnotes omitted).
Once the determination has been made that a term is
entitled to trademark protection, the pivotal inquiry becomes
whether the allegedly infringing mark is likely to cause
consumer confusion. See Boston Athletic Assoc. v. Sullivan,
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867 F.2d 22, 28 (1st Cir. 1989); Wheeler, 814 F.2d at 817.
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That is, whether a consumer is likely to believe that Boston
Beer Works' products are in fact produced by The Boston Beer
Company.
Whether a term is generic, descriptive, or
inherently distinctive is a question of fact. See Wiley, 762
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F.2d at 141. Similarly, whether a mark has acquired
secondary meaning is also a question of fact. Wheeler, 814
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F.2d at 816. Accordingly, the district court's findings on
both of these questions are subject to review only for clear
error. Atlantic Track & Turnout Co. v. Perini Corp., 989
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F.2d 541, 543 (1st Cir. 1993).
As this court has previously noted, "[t]he clear
error hurdle is ... quite high." Lenn v. Portland School
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Committee, 998 F.2d 1083, 1087 (1st Cir. 1993). Of course, a
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district court's rulings of law are reviewed de novo. Id.
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A. Inherent Distinctiveness
A. Inherent Distinctiveness
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At the outset, appellant contends that its marks
are inherently distinctive, as opposed to descriptive, and
are therefore entitled to trademark protection without proof
of secondary meaning. Because we hold that appellant has
failed to preserve the issue of inherent distinctiveness for
appeal, we decline to reach the merits of its contentions.
The law in this circuit is crystalline: a
litigant's failure to explicitly raise an issue before the
district court forecloses that party from raising the issue
for the first time on appeal. See McCoy v. Massachusetts
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Institute of Technology, 950 F.2d 13, 22 (1st Cir. 1991),
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cert. denied, 112 S. Ct. 1939 (1992).
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After scouring the record, we have failed to
uncover a single instance, either orally or through
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submission, where appellant advocated that its marks were
anything but descriptive. From the very outset of this
litigation appellant had pitched its case on the theory that
its marks are descriptive, that they have attained secondary
meaning, and are thus entitled to trademark protection. The
trial below proceeded on the common understanding that the
marks were descriptive; and appellant acknowledged that
secondary meaning and likelihood of confusion were the only
triable issues. Moreover, after rendering its bench
decision, the trial court asked appellant if any additional
findings were necessary in order to address all of its
claims, and appellant did not request a finding on inherent
distinctiveness.
According to appellant, it preserved this issue by
underlining, and thereby objecting to, appellee's proposed
pre-trial finding that the marks were "neither arbitrary nor
fanciful." Appendix at 444. We have little trouble in
finding that the act of underlining is insufficient to
preserve this issue for appeal. See Rodriguez-Pinto v.
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Tirado-Delgado, 982 F.2d 34, 41 (1st Cir. 1993) ("arguments
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made in a perfunctory manner below are deemed waived on
appeal"). Because we see no reason to diverge from our
customary practice, we treat this argument as waived.
B. Secondary Meaning
B. Secondary Meaning
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Because appellant's marks are descriptive, they are
entitled to trademark protection only upon a showing of
secondary meaning. Secondary meaning
refers to a word's, or a sign's, ability
to tell the public that the word or sign
serves a special trademark function,
namely, that it denotes a product or
service that comes from a particular
source. Words and phrases, in ordinary,
non-trademark, use normally pick out, or
refer to, particular individual items
that exhibit the characteristics that the
word or phrase connotes (without specific
reference to the item's source).
DeCosta v. Viacom International, Inc., 981 F.2d 602, 606 (1st
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Cir. 1992), cert. denied, 113 S. Ct. 3039 (1993); see also
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Wheeler, 814 F.2d at 816 ("words which have a primary meaning
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of their own ... may by long use in connection with a
particular product, come to be known by the public as
specifically designating that product") (quoting
Volkswagenwerk AG v. Rickard, 492 F.2d 474, 477 (5th Cir.
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1974)); President & Trustees of Colby College v. Colby
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College-N.H., 508 F.2d 804, 807 (1st Cir. 1975) (a name has
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achieved secondary meaning when "a significant quantity of
the consuming public understand the name as referring
exclusively to the appropriate party"). Accordingly,
secondary meaning has been established in a geographically
descriptive mark where the mark no longer causes the public
to associate the goods with a particular place, but to
associate the goods with a particular source. Burke-Parsons-
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Bowlby Corp. v. Appalachian Log Homes, 871 F.2d 590, 595 (6th
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Cir. 1989) (citing American Footwear Corp. v. General
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Footwear Co. Ltd., 609 F.2d 655 passim (2d Cir. 1979), cert.
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denied, 445 U.S. 951 (1980)).
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"Proof of secondary meaning entails vigorous
evidentiary requirements." Perini Corp. v. Perini
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Construction, 915 F.2d 121, 125 (4th Cir. 1990) (quoting
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Thompson Medical Co. v. Pfizer Inc., 753 F.2d 208, 217 (2d
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Cir. 1985)); see Bank of Texas v. Commerce Southwest, Inc.,
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741 F.2d 785, 787 (5th Cir. 1984) (evidentiary burden
necessary to establish secondary meaning for a geographically
descriptive term is substantial). Moreover, it is the party
seeking protection of a mark who bears the burden of proving
that secondary meaning has attached. Bristol-Meyers Squibb
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Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1041 (2d Cir.
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1992); Blinded Veterans Assoc., 872 F.2d at 1041.
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To establish secondary meaning in the mark
"Boston," not only must appellant prove that, when read or
heard by consumers in connection with beer, "Boston" no
longer means that the beer was brewed in Boston or by a
Boston-based brewer, but that the consuming public recognizes
that the word "Boston" identifies appellant as the source of
the beer.
Similarly, with respect to the mark "Boston Beer,"
as used in appellant's name, The Boston Beer Company,
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appellant must prove that a substantial portion of the
consuming public associates those words specifically with
appellant's business. See Perini Corp., 915 F.2d at 125.
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"But secondary meaning cannot be recognized where, despite a
degree of association between the mark and the producer, the
original meaning remains dominant; so long as the mark
remains descriptive in its primary significance, subsidiary
connotations cannot justify trademark treatment." R.
Callmann, Unfair Competition, Trademarks and Monopolies,
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19.26 at 144 (4th ed. 1989); see Burke-Parsons-Bowlby Corp.,
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871 F.2d at 595 (geographically descriptive term lacks
secondary meaning if it still primarily denotes a geographic
area as opposed to a single source).
Among the factors this court generally looks to in
determining whether a term has acquired secondary meaning
are:
(1) the length and manner of its use, (2)
the nature and extent of advertising and
promotion of the mark and (3) the efforts
made in the direction of promoting a
conscious connection, in the public's
mind, between the name or mark and a
particular product or venture.
Wheeler, 814 F.2d at 816 (quoting Volkswagenwerk AG v.
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Rickard, 492 F.2d at 478). Proof relating to these factors
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constitutes circumstantial evidence from which a court must
draw reasonable inferences. In its bench decision, the
district court found, and appellant does not dispute, that,
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except for the survey, the evidence of secondary meaning was
not materially different at trial than it was at the
preliminary injunction hearing. The court then concluded
that the addition of the survey to the circumstantial
evidence did not alter its prior findings, and that appellant
had not met its burden of establishing secondary meaning. In
its brief appellant does not explicitly address the court's
earlier findings. Instead, appellant alleges that the
court's treatment of the survey is grounds for reversing its
finding on secondary meaning. We turn to the survey.
Survey evidence has become a well-recognized means
of establishing secondary meaning. See President and
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Trustees of Colby College, 508 F.2d at 809; Papercutter, Inc.
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v. Fay's Drug Co., Inc., 900 F.2d 558, 564 (2d Cir. 1990).
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In fact, consumer surveys and testimony are the only direct
evidence on this question. See International Kennel Club v.
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Mighty Star, Inc., 846 F.2d 1079, 1085 (7th Cir. 1988).
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Appellant explains its survey in three steps. First,
appellant points to the percentage of participants, 36 and 31
percent respectively, who identified The Boston Beer Company
and Boston Beer Works as the producer of Samuel Adams beer.
Next, appellant contends that this correlation proves that
the public associates Samuel Adams beer with the words
"Boston Beer." Finally, appellant concludes that secondary
meaning has been established because whenever a consumer sees
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or hears the term "Boston Beer," it will associate the
product with the brewer of Samuel Adams beer. The district
court found that the survey did not bridge the logical gap
between steps two and three.
Our examination of the survey and its results
convinces us that, while the survey might provide some
evidence of secondary meaning, the district court's treatment
of the survey was not clearly erroneous. The court's
finding, that the survey results demonstrate a product-place
association as opposed to a product-source association, is
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not inconsistent with the survey results, and provides a
viable alternative to the explanation proffered by appellant.
Just because one-third of those surveyed, when
presented with a list of beers and a brewer whose name
contained the words "Boston Beer," matched that brewer with
Samuel Adams beer, does not mean that the words "Boston
Beer," used in connection with appellant's name, have
necessarily assumed a secondary meaning. It is just as
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probable, as the district court lucidly explained, that
appellant's marks are still primarily perceived by consumers
as geographically descriptive terms, and that consumers are
simply aware of the fact that Samuel Adams is a Boston
beer.5 Moreover, the district court observed that the
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5. Even assuming that appellant's reading of the survey
results is the correct one, a positive response rate of 36%
is hardly overwhelming. See generally Callmann, supra,
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survey was somewhat suggestive in that it gave the impression
that Boston Beer Works was a "company," like Anheuser-Busch
and Latrobe, as opposed to a restaurant/brew pub.
Furthermore, if the survey unequivocally
establishes secondary meaning in the marks "Boston Beer" and
"Boston," then we are at a loss to understand why, when 36%
of those surveyed thought that Samuel Adams beer was brewed
by The Boston Beer Company, only 4% of the same group thought
that Boston Ale was also produced by that company.6 If the
marks have acquired secondary meaning, the same people who
selected Samuel Adams as one of appellant's brews should have
selected Boston Ale as well.
Because the district court's ultimate finding on
secondary meaning was based upon its consideration of
circumstantial as well as direct evidence, we briefly discuss
the former. We have already set forth the relevant factors
for considering circumstantial evidence of secondary meaning,
as well as the district court's thorough analysis of the
evidence thereunder. The district court's finding that the
circumstantial evidence of secondary meaning did not support
an inference favorable to appellant is well-supported.
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19.27.50 at 205 (collecting cases).
6. Additionally, it is possible that there was no
overlap between the people who selected Samuel Adams beer and
those who selected Boston Ale.
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After reviewing the entire record, placing
particular emphasis on appellant's survey, we can find no
error, clear or otherwise, in the district court's finding
that appellant failed to carry its burden of proving
secondary meaning.
Next appellant argues that the trial court
committed legal error by "rejecting" the survey for "failure
to show any consumer identification of `company'." According
to appellant this was a mistake because the Lanham Act does
not require that the consumer actually know the producer's
name. As a preliminary matter, appellant is incorrect when
it states that the district court "rejected" the survey. The
district court accepted the survey into evidence and gave it
careful consideration before concluding that the survey did
not provide a basis for a finding of secondary meaning.
Furthermore, appellant incorrectly attributes a
legal error to the court. At the risk of repeating
ourselves, the district court found that appellant had not
met its burden of proving that its marks had come to identify
a single source of beer as opposed to simply identifying a
geographic origin. This finding does not rest upon an
erroneous view of the law.
Finally, appellant tries to execute an end-run
around the district court's finding on secondary meaning.
Appellant maintains that because the survey demonstrates a
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likelihood of consumer confusion between The Boston Beer
Company and its products and Boston Beer Works and its
products, secondary meaning must exist. While it is true
that a finding of a likelihood of confusion could only occur
in this case if secondary meaning had attached to appellant's
marks, appellant's argument places the cart before the
Clydesdale.
The district court found that appellant's marks
were not entitled to trademark protection because they had
not attained secondary meaning. Accordingly, that court did
not need to address the question of likelihood of confusion.
The determination as to whether a likelihood of confusion
exists is a question of fact. See Aktiebolaget Electrolux v.
___ _______________________
Armatron International, Inc., 999 F.2d 1, 3 (1st Cir. 1993)
_____________________________
(citing Keds Corp. v. Renee International Trading Corp., 888
__________ _________________________________
F.2d 215, 222 (1st Cir. 1989)). This determination is
generally based upon eight separate factors, each of which
requires its own factual findings. See id. (setting out the
___ ___
eight factors). Because we affirm the district court's
finding on secondary meaning, we need not address the issue
of likelihood of confusion.
Affirmed.
Affirmed.
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